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Software patents under United Kingdom patent law

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Globally, the extent to which patent law should allow the granting of patents involving software ("software patents") is controversial (see Software patent debate).

Despite this, the UK Patent Office regularly grant patents to inventions that are partly or wholly implemented in software. The extent to which this is done is currently in flux due to numerous conflicting decisions of the Patent Office and judgements of the UK Courts. The extent to which the UK Patent Office should follow decisions of the European Patent Office is also hotly debated.

Substantive law

The substantive law is set out in Section 1 of the UK Patents Act (1977) [1]. The wording of this differs a little from Article 52 of the EPC; but the Courts, notably in CFPH's Application[2], have taken the view that since the purpose of this article of the 1977 act was to transpose the requirements of the Article 52 into UK law, any differences from the Convention in the text of the UK Act are to be ignored. The text of the EPC itself can therefore be regarded as definitive.

Article 52 of the EPC [3] explicitly decrees that "programs for computers" are not patentable subject matter and are therefore excluded from patentability. However the exclusion applies only "to the extent to which a European patent application or European patent relates to such subject-matter or activities as such" (Art. 52(3) EPC).

Case law

The case law in the United Kingdom relating to excluded subject matter in general, and computer programs specifically, has a somewhat sporadic history. Until mid 2005, the leading case in the UK over whether an invention involving a computer program was patentable, or whether it was a computer program "as such" was the judgment in Fujitsu's application from 1997 [4].

Only more recently, in the judgement in CFPH LLC's application from 2005 [5] did the UK Courts again consider the issue of excluded subject matter in detail. In the meantime, the practice of the EPO and the UKPO had diverged significantly, and this judgement made some efforts to bring UK law more into step with the practice of the EPO.

Court of Appeal Judgements

The Court of Appeal judgment in Fujitsu's application is from 1997 [6]. The case in question had been refused by the UK Patent Office and by J Laddie on Appeal before the High Court. LJ Aldous heard the appeal before the Court of Appeal and his judgement is notable for several reasons:

- It stated that the UK courts should look to the decisions of the European Patent Office for guidance in interpreting the exclusions.

- It confirmed that a "technical contribution" is needed to make a potentially excluded thing patentable, proclaiming that this was a concept at the heart of patent law.

- It recognised the difficulty inherent in determining what is and is not "technical", such that each case should be decided on its own facts.

- It stressed that the substance of an invention should be used to assess whether or not a thing is patentable, not the form in which it is claimed. Thus a non-patentable method cannot be patented under the guise of an apparatus.

Based on these principles, the final judgement appears somewhat trivial. The alleged invention was a new tool for modelling crystal structures on a computer. A scientist wishing to investigate what would result if he made a new material consisting of a combination of two existing compounds would enter data representing those compounds and how they should be joined into the computer. The computer then automatically generated and displayed the new structure using the data supplied. Previously, the same effect could only have been achieved by assembling plastic models by hand - a time consuming task. The invention was therefore certainly new and useful, but the fact that the same task could be achieved manually in the past was the application's downfall. As claimed, the invention was nothing more than a conventional computer which automatically displays a crystal structure shown pictorally in a form that would in the past have been produced as a model. The only advance expressed in the claims was the computer program which enabled the combined structure to be portrayed more quickly. The new tool therefore provided nothing that went beyond the normal advantages that are obtained by the use of a computer program. Thus, there was no technical contribution and the application was rejected as being a computer program as such.

It is difficult to say whether there would have been any way for Fujitsu to have obtained a granted patent. However, if the invention as claimed had made some effort to explain the particular steps carried out by the computer program, and if these were different from the steps which would have been carried out manually in the past, then there is the possibility that this could have represented a technical contribution. The particular technical contribution could have been that the claimed invention would not then have been merely a conventional computer for automatically carrying out a previously manual process, but rather a computer programmed in a specific way to perform a useful task.

The question then arises as to whether that invention would have been obvious or, conversely, inventive. Unfortunately, the Fujitsu judgement says nothing on the topic of inventive step and this omission resulted in some major divergences between the practice of the UK Patent Office and the European Patent Office over the next seven years. The EPO moved on from the idea of a technical contribution (despite this reputedly being a "concept at the heart of patent law") and instead focused on whether there was anything technically inventive. The UK Patent Office, in the meantime, remained rooted in a regime where the inventive step of computer program inventions was largely ignored in favour of rejections that there was no technical contribution. Unfortunately, the difficulties in assessing what represented a technical contribution were never satisfactorily overcome and the decisions of the UK Patent Office consequently had an unsettling arbitrary quality to them. Many applications which perhaps should not have been granted were, and vice versa.

High Court Judgements

The most important High Court case is, at present, the judgement in CFPH LLC's Application. Not only was it the first case concerning excluded subject matter heard by the UK Courts since Fujitsu, but the UK Patent Office swiftly altered their practice to follow its recommendations. [7]

The judgements in Neal William Macrossan's Application and Aerotel v Telco are also of importance since these decisions have been appealed to the Court of Appeal.

Patent Office decisions

Decisions of the Patent Office, made by senior Hearing Officers, are not binding on the Patent Office in the way that judgements of the Courts are. Nevertheless, there are, by nature, many more Office decisions than there are court judgments and a review of the decisions is important in understanding the current practice of the UK Patent Office. Decisions of the Patent Office are all listed on the Patent Office website, www.patent.gov.uk

Interplay between EPO and the UK Patent Office and Courts

Patents granted by the European Patent Office (EPO) may be brought into effect in the UK once certain formal requirements have been met. [8] As soon as a European patent is granted (provided that no opposition is filed), then final authority to interpret Article 52(2) and (3) EPC rests with each national jurisdiction and any person may apply to the UK Patent Office or the UK courts to have a patent granted by the EPO revoked in the UK.

There is to date no supranational European system for patent litigation, so the courts of each EPC Contracting State retain the final say, and vary to some extent from one to another, as to just how far the exclusion (and its qualification) should extend. (See also: Software patents under the European Patent Convention, which also discusses the evolving position of the EPO on this issue).

Compared to the EPO, a case can be made that the UK Patent Office [9] have consistently taken a somewhat more restrictive view against the granting of patents for computer implemented inventions. This has sometimes drawn criticism from those advocating the need for harmony across Europe. Nevertheless, the position of the UK Patent Office is not nearly as restrictive as many campaigners against software patents would prefer.

In contrast to the practice of the UK Patent Office, the UK Courts seem more open to the patenting of computer implemented inventions. In his decision in Research In Motion UK Ltd. v Inpro Licensing SARL, the Honourable Mr Justice Pumfrey highlighted the importance of not giving the exclusion to computer programs too wide a scope. Although the patent was ultimately revoked as lacking an inventive step, the judge denied that it was unpatentable as being a computer program as such. However, it is difficult to tell whether the UK courts are "more" or "less" restrictive than the EPO since the body of case law is quite different.

References

Judgments of the UK courts

(EWHC = England and Wales High Court; RPC = Reports of Patent, Design and Trade Mark Cases; CA = Court of Appeal; Pat = Patents Court; Ch = Chancery Division).

Decisions of the UK Patent Office

UK Patent Office practice notices and guidance

See also

External links

Reviews and discussions

Other

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